Patients
sometimes suffer and may even die because of prescription errors caused by
confusion between drug names. To protect consumers from these kinds of
mistakes, medical regulators are generally involved in the vetting of the names
used for medications. Rejection rates for invented drug names are
reported to be as high as 40% and the cost of simply choosing an ethical name for
a drug can be of the order of $1,000,000 to $2,000,000. Applicants often file
multiple name applications with the regulators in case some are rejected.
Because of the value of the names, the applicants also file trade-mark
applications in any significant jurisdictions.
Once
a name has been approved by the medical regulators, the other alternative names
(and trade-mark registrations) generally become irrelevant, but if they have
been registered as trade-marks they will remain on the register for a number of
years. As a result the trade-mark registers can become cluttered with unused
marks, all of which can be cited against future applications. A January 2013
research paper by G. v. Graevenitz (see Economics of IP: Trademark Cluttering) has
shown that in 2010 there were over 150,000 European Community Trademarks on
file relating to pharmaceuticals, and there are over 21,000 new applications
per year in pharmaceutical related classifications. The paper estimates that
about 6% of these marks are surplus to requirements and that the likely cost of
inventing all these extra names is at least about $20,000,000 to $50,000,000
a year.
A
large part of the costs associated with new trade-marks are the costs of searching
the register to identify conflicting names, so that an applicant does not waste
money filing applications that are doomed to failure and does not adopt names
that will infringe other registered trade-marks. An owner wants trade-marks to
be uniform from one country to another so that a reputation can be built
globally rather than piecemeal in different countries. But the costs of
ensuring that a chosen mark is available in every jurisdiction of interest can
be daunting. Searches have to be conducted in multiple countries
and multiple languages before filings are made. Applicants will file
applications for multiple marks as insurance against the rejection of one
or more of the chosen candidate names, and most likely will file applications for
a number of key translations of the name in question.
This
all leads to a vicious cycle. The more marks are registered, the harder it gets
to find a new name to register and the more incentive there is to file multiple
applications as fallback positions. The cost of protecting a trade-mark,
and the importance of getting it right, makes it critical to obtain specialist
professional advice before decisions are taken. MBM provides advice on all
areas of trade-mark strategy, including the choice of marks, global filing
strategies and the handling of disputes.
By: Euan Taylor